Hello dear readers. It will be recalled that on February 22, 2020, thirty-one patent practitioners wrote a letter to Commissioner for Patents Drew Hirshfeld. The letter had four “asks” relating to DAS. I am delighted to report that we have already gotten what we wanted of the four “asks”.
To explain about the “ask” that we have gotten results for, I should provide a bit of background. I should first point out that although the Postal Service did not deliver the THIRTY-ONE PATENT PRACTITIONERS letter to the USPTO until February 24, the arrival of the physical letter was not the first that Commissioner Hirshfeld had seen of this letter. The genesis of the letter was my blog post of February 8, 2020 in which I posted the text of the to-be-sent letter and started collecting signatures. I am quite sure that one or more USPTO people who are subscribed to my blog saw the posting on February 8 and printed out the letter and showed it to to Commissioner Hirshfeld that same day. My point is that no later than February 8, the Commissioner knew that the letter was on its way and he knew exactly what the letter was going to say. The only thing that he did not know until February 24 was just what the number of signers would be, and how the blanks in this sentence would get filled in:
The signers of this letter, and/or their firm or corporation, have between them filed more than thirty thousand patent applications at the USPTO in the past ten years and have paid more than forty million dollars in fees to the USPTO in the past ten years.
Anyway, in this letter there were four “asks”:
- That the USPTO discontinue its present practice of intentionally and actively aging PDX and DAS retrieval requests. We ask instead that going forward, the USPTO retrieve priority documents from PDX and DAS at the time that the applicant requests such retrieval.
- That USPTO discontinue the PDX system, so that going forward, priority document retrieval from the EPO can take place through the DAS system.
- That Form PTO/SB/38 be reformatted so that the boxes for the important information (application number, DAS access code, filing date, Office of first filing) be large enough to permit text to be entered in a font that is easily read by the human eye even after the form has been degraded in the e-filing process.
- That USPTO become a Depositing Office with respect to international patent applications (PCT applications) that have been filed at the RO/US (the receiving office of the USPTO).
The point of this blog post is to take a small victory lap. The USPTO has indeed reformatted Form PTO/SB/38 so that the boxes are bigger. At the end of February 2020 (after the Commissioner learned that this “ask” was on the way), the USPTO reformatted the Form. Here is the relevant portion of the old form:
And here is how USPTO reformatted it after seeing our “ask”:
As you can see we got what we wanted. The boxes for the previously hard-to-read information — the two-letter code for the Office of First Filing, the application number, the filing date, and the DAS access code — are now much bigger.
It is important not to celebrate too much about this result. This was clearly by far the easiest of the four “asks” for USPTO to give to us.
By comparison, the “ask” of scrapping PDX requires the cooperation of the EPO. People at the USPTO have informally told me that supposedly USPTO has for years been on board with the idea of scrapping PDX and that EPO has all along been the foot-dragger on the scrapping of PDX.
The “ask” of having RO/US join the DAS system as a Depositing Office requires the cooperation of the Office of the Chief Information Officer.
This leaves the “ask” that USPTO please retrieve each electronic certified copy when the applicant asks that it be done rather than tossing the retrieval request into the freezer and doing the retrieval when the USPTO is good and ready, long after the 4-and-16 date has come and gone. My personal guess is that USPTO’s reason for having set up the toss-into-the-freezer was based upon conditions that existed back when it was only PDX and there was no DAS. Back when there was only PDX and there was no DAS, it made a world of difference (from the computer programming point of view) depending on whether the to-be-retrieved application had or had not been published by the Office of First Filing. If the application had already been published, then it was no big deal for the OFF to permit any and all OSFs (offices of second filing) to retrieve the electronic certified copy with no need to require any proof on the part of the OSF that it was somehow entitled or authorized to gain access to the electronic certified copy. But back in the days of PDX, it would have been extremely difficult to design any system so that it could correctly work out whether some pre-publication retrieval request should or should not be permitted to take place.
With DAS, on the other hand, the OSF is in possession of a DAS access code which completely puts to rest any question as to whether it is okay for the OFF to hand over the electronic certified copy. Even if the application in question has not been laid open for public inspection, the DAS code provides a clear indication that it is okay to hand over the electronic certified copy.
So I think actually this particular “ask” should not be much of a problem at the USPTO. Yes there would be a one-time work crunch while the USPTO worked off the bolus of retrieval requests that had been tossed into the freezer. But there are two things to be said about that. First, it is only a one-time work crunch. Second, working off the bolus of deferred retrieval requests should not be hardly any work at all, because this is the sort of thing that computers are supposed to be good at. There should not be a need for very many human involvements in the retrievals. The actual characters of the priority application number, two-letter code of Office, filing date, and DAS access code are all provided in a computer-readable XML format inside the Form AIA/14 (the ADS).